Green Branding – Trade Mark Issues in the Energy Sector

Green or environmentally friendly branding for energy companies can lead to issues such as claims of greenwashing. Our Intellectual Property team discusses some of the risks that can be associated with green brands. In addition, they examine some tips for trade mark protection in this sector.

As companies in the energy sector continue their push into renewables, decarbonisation and sustainability, issues such as green branding and greenwashing increasingly come to the fore.

According to the EUIPO, trade mark applications relating to climate change, green energy and the environment are on the increase.

We discuss some of the risks that may be associated with new green brands. We provide some tips regarding trade marks in this sector.

Many companies in the energy sector are rebranding as they transition to greener products and services. Schlumberger, the world’s largest oilfield services provider, for example, recently rebranded to SLB to underscore its vision for a decarbonized energy future. As companies in the renewables space continue to develop new products and services, they need sufficient trade mark protection.

Green trade marks generally describe a class of trade marks that relate to products or services which are environmentally friendly. Green trade marks can result in claims of greenwashing, if they are misleading or deceptive as to products or services actually being environmentally friendly.

Companies in the energy sector, particularly those transitioning to a more environmentally friendly image need to take care that any new green trade marks or greener brands do not result in greenwashing claims.

The EU’s Guidance on the interpretation and application of Directive 2005/29/EC of the European Parliament and of the Council concerning unfair business-to-consumer commercial practices in the internal market (UCPD) refers to environmental claims.

The Guidance confirms that environmental statements in brand names and product names is subject to the “same substantiation requirements as those which apply to other environmental claims in marketing communications, unless the company can prove that this name has no environmental connotation or existed already before”.

A name used in marketing would need to mislead the average consumers and be likely to cause them to take a transactional decision that they would not have taken otherwise, to breach the UCPD. However, businesses in this sector should take care with trade mark selection in this regard.

Green trade marks can also face registration objections if they are considered descriptive. For example, the EUIPO’s Fifth Board of Appeal recently refused a trade mark application for the below for certain building related goods and services.[1]

The Board held that the word element was purely laudatory. It also stated that the use of a leaf symbolised nature or the environment and indicated that goods were environmentally friendly. The trade mark considered as a whole, did not have the necessary minimum degree of distinctive character to be registered as an EU trade mark.

Conclusion

Some trade mark tips to successful branding or rebranding to greener trade marks:

• Avoid trade marks which merely denote a particular positive or appealing environmental quality, such as “ECO” or “GREEN”. They may be refused by the EUIPO as being descriptive, even if combined with other descriptive terms or non-distinctive figurative elements.
• Consider the EUIPO’s “Harmonised Green Terms” for trade mark applications. This is an inventory of standardised goods and services, eg wind energy and energy saving, accepted by all IP offices of the EU and some non-EU countries.
• If retaining an existing brand, but moving to more environmentally friendly products or services, consider whether existing trade mark protection needs to be extended through new applications.
• Consider if there are relevant certification marks which may show greener credentials.
• If new greener goods or services result in opening markets in other jurisdictions, new trade mark applications may be required for those new jurisdictions.

As with all trade marks, ensure that trade mark searches are carried out prior to launching a new green brand.

For more information and expert advice, contact a member of our Intellectual Property Team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.

[1] Case R 1409/2022-5